Jonathan Livingston Engineering Co Limited v Commissioner of Patents
[2021] NZHC 1227
•28 May 2021
IN THE HIGH COURT OF NEW ZEALAND WELLINGTON REGISTRY
I TE KŌTI MATUA O AOTEAROA TE WHANGANUI-A-TARA ROHE
CIV-2020-485-25
[2021] NZHC 1227
BETWEEN JONATHAN LIVINGSTON
ENGINEERING CO LIMITED
AppellantAND
COMMISSIONER OF PATENTS
Respondent
Hearing: On the Papers Counsel:
Yi-Chuan Lin for Appellant
V C Casey QC as Counsel Assisting
Judgment:
28 May 2021
JUDGMENT OF ISAC J
[On application for leave to represent a company]
Introduction
[1] This case concerns an appeal from a decision of the Assistant Commissioner of Patents refusing acceptance in New Zealand of the appellant’s patent application.
[2] When the appeal was filed, the appellant, a Taiwanese corporation, was represented by a firm of patent attorneys. They were granted leave to withdraw from the record in August 2020.
[3] Mr Yi-Chuan Lin is the director of the appellant. He is also resident in Taiwan. He is not a New Zealand qualified lawyer and, from the papers before the Court, does not appear to claim expertise in intellectual property matters.
JONATHAN LIVINGSTON ENGINEERING CO LIMITED v COMMISSIONER OF PATENTS [2021] NZHC 1227 [28 May 2021]
[4] The company now applies for leave to have Mr Lin appear before this Court on its behalf on the appeal.
Background
[5] A notice of appeal was filed on 27 January 2020. On 11 August 2020, Mallon J vacated the fixture allocated to hear the appeal at Mr Lin’s request.1 At the same time, Mr Lin indicated he wished to represent the appellant, and the patent solicitors who had previously been engaged were granted leave to withdraw.
[6] On 22 February 2021, Gendall J made directions regularising what had previously been an informal request by Mr Lin for leave to represent the appellant. The timetable required the appellant to file and serve an application for leave for Mr Lin, as a non-lawyer, to represent a company. Gendall J noted:2
This application is to be accompanied by supporting material which is to address issues as to why a lawyer cannot be obtained or instructed to act on behalf of the appellant company and, if so, the suitability of the person proposed to act on behalf of the company.
[7]In this case, that person is Mr Lin.
[8] On 25 March 2021, Mr Lin filed a document entitled “Appellant’s Leave of the High Court Application together with Supporting Documents Dated: 15 March 2021”. Despite its title, the application for leave was not accompanied by any supporting documents. Nor did it explain why a lawyer could not be instructed, or address Mr Lin’s suitability to act on behalf of the appellant company in intellectual property litigation in New Zealand.
[9] Ms Casey QC, appointed as counsel assisting in March 2020, filed a helpful memorandum on 31 March 2021. She correctly noted that Mr Lin’s 25 March notice did not specifically address the matters Gendall J outlined in his minute of 22 February.
1 Jonathan Livingston Engineering Co Ltd v Commissioner of Patents CIV-2020-485-25, 11 August 2020.
2 Jonathan Livingston Engineering Co Ltd v Commissioner of Patents CIV-2020-485-25, 22 February 2021 at [7](a).
[10] The proceeding came before me on 3 May 2021 when I conducted a further case management conference. Mr Lin attended by telephone from Taiwan, and Ms Casey appeared as counsel assisting.
[11] Following discussion with Mr Lin and Ms Casey, I provided Mr Lin with a further opportunity to provide relevant evidence and submissions in support of the application for leave, and indicated that thereafter the matter would be dealt with by way of a judgment on the papers. At the conclusion of my minute of 3 May I noted:3
I encourage Mr Lin to look carefully at the matters identified by Gendall J at [7] of his Minute of 22 February, and the matters raised in Ms Casey’s memorandum, when preparing further material for consideration by the Court.
[12] In response, on 19 May 2021 Mr Lin filed a further document entitled “Appellant’s Leave of the High Court Application together with Supporting Documents”. Once again, the notice, despite its title, was not accompanied by any supporting documents.
[13] In the 19 May document Mr Lin submitted that the 10 working days I had provided as a further opportunity to file material identified by Gendall J as relevant to the company’s application was “unreasonable for the last-chance searching of complete body of evidence from the very large document-and-email archives of the claimed invention.” This might suggest Mr Lin thought I intended to require material relevant to the appeal itself rather than the application for leave.
[14]Mr Lin went on to say:
Suppose there is a clearly written rule for restricting the appellant from representing himself, then he believes that AJ Park is still responsible for telling a lie. On the other hand, the former Justice should have firmly pointed the court rule to both sides last August, as a result 15 working days following the 1st telecommunication meeting-minutes should have been pulled in for six months earlier.”
[15] Although it is not entirely clear, I take from this submission that Mr Lin considers the Court ought to have advised him of the general rule requiring companies
3 Jonathan Livingston Engineering Co Ltd v Commissioner of Patents CIV-2020-485-25, 3 May 2021 at [6].
to be represented by barristers and solicitors of the High Court of New Zealand before granting his former patent attorneys leave to withdraw. However, I note that Mallon J’s minute of 11 August explicitly raised the issue with Mr Lin:4
I confirm that AJ Park is no longer solicitor on the record. I note that the appellant wishes to represent itself. However, ordinarily a corporation is not permitted to conduct a proceeding although the Court retains a discretion to allow this. The appellant will need the leave of the Court should it maintain its current intention to self-represent. This can be considered further at the telephone case management conference. Should it be permitted, it may be necessary for the hearing to proceed remotely using the Court’s remote participation facilities.
[16] Unfortunately, the further document filed by Mr Lin dated 18 May 2021 once again failed to address the issues identified by Gendall J, being matters directly informing whether the leave application should be granted.
Legal principles
[17] It is well settled in New Zealand that a company has no right to be represented in the conduct of a case in the High Court except by a barrister or solicitor.5 The Mannix rule, as it is commonly known, has been reaffirmed in subsequent decisions of the Court of Appeal and in this Court.6
[18] In Re Mannix, Cooke J noted there is a residual discretion to allow non-lawyers to appear on behalf of companies, but that discretion is circumscribed by necessity and expedience.7 The exception is primarily used in emergencies when counsel is not available, for straightforward matters where the assistance of counsel is not necessary, or where the requirement for counsel would be unduly technical or burdensome.
[19] An important principle underlies the Mannix rule. As a company has a separate existence from that of its shareholders and directors, representation of its interest by a director gives rise to the concern that it will be the individual director’s perspective
4 Jonathan Livingston Engineering Co Ltd v Commissioner of Patents, above n 1, at [3].
5 Sovereign Books Ltd and Creation Productions Ltd v Commissioner of Inland Revenue [2016] NZHC 1313, [2016] NZAR 973, at [4].
6 See for example New Zealand Cards Ltd v Ramsay [2012] NZCA 285 and Dreamtech Designs & Productions Pty Ltd v Clownfish Entertainment Ltd [2015] NZCA 491 at [6], following Re G J Mannix Ltd [1984] 1 NZLR 309 (CA) at 311 and 314.
7 Re G J Mannix Ltd, above n 6, at 314.
that may be presented to the Court and not that of the company. The underlying rationale was expressed by Asher J in these terms:8
I am bound by Re Mannix and the cases that have followed it. In my respectful view there is a good reason for the rule in Re Mannix. A company is not a natural person. It has shareholders, officers and directors who have individual duties and interests. Incorporation of a company gives great benefits to the shareholders. In particular, while they may profit from the actions of the company, they are not personally liable for those actions. This arises because of the different nature of a company to that of a person. However, it follows from the separateness of a company from those who own its shares and run it, that there will always be a concern if a director acts for a company in court that it is the director’s perspective that is presented and not that of the company. The Court should not have to make an inquiry to see whether indeed the person representing the company does have the support of all relevant parties.
[20] Further, unlike an individual officer who seeks to represent the company, a solicitor is ethically constrained to represent the company’s interests.9 Such constraints on solicitors — and their knowledge of the duties and responsibilities to the court — also means they are less likely to require indulgences in the rules of procedure or to use court processes for vexatious purposes.10
Application
[21] The current proceeding is neither routine nor lacking in complexity. It involves an appeal from the Assistant Commissioner of Patents concerning a convention application under the Patents Act 2013.
[22] The underlying patent application involves a design for an electrical generator within a wheel, the generator having a magnetic field provided by a permanent magnet.11 The decision under appeal goes on to note that:12
The invention is directed to the integration of the generator into the wheel rim rather than to the mechanical, electrical and magnetic configuration of the
8 Sovereign Books Ltd & Creation Productions Ltd v Commissioner of Inland Revenue, above n 5, at [9].
9 Commissioner of Inland Revenue v Chesterfields Preschools Ltd [2013] NZCA 53, [2013] 2 NZLR 679, (2013) 26 NZTC 21-007, [2013] NZCCLR 10 at [34] citing rr 5.2 and 6 of the Lawyers and Conveyancers Act (Lawyers: Conduct and Client Care) Rules 2008.
10 At [34] citing Re G J Mannix, above n 6, at 315.
11 An application for Letters Patent No 725402 in the name of Jonathan Livingston Engineering Co Limited [2019] NZIPOPAT 9 at [19].
12 At [20]–[21].
permanent magnet rotor generator per se. Permanent magnet rotor generators are well known and have been available in many different configurations and constructions for many years prior to the filing date of the application.
In a practical generator of the sort the applicant is using power is drawn from a stator winding in which a non-conservative emf has been induced by a changing flux linking the winding (the Faraday Law).
[23] It will be apparent from this brief description that the appeal involves the application of the law of patents to a claimed invention. Due to the technical nature of the subject matter of the proceeding it is unsurprising that a patent attorney was originally retained by the appellant to represent its interests.
[24] In that context, it is also unsurprising that Gendall J directed Mr Lin to address two key factors in his application for leave to represent the appellant company, namely:
(a)why a lawyer could not be retained to act on behalf of the company; and
(b)If a lawyer could not be retained, the suitability of Mr Lin to act on the appellant’s behalf.
[25] Despite clear opportunities to address these issues, and the passage of three months since the original directions were made, the appellant has failed to provide a satisfactory foundation to support its application.
[26] I do not consider Mr Lin’s repeated failure to address the issues identified by the Court has been wilful. I think it more likely he did not clearly understand what he was being asked to do, or that he does not appreciate the factors relevant to the decision the Court has been asked to make. But that failure rather highlights his lack of suitability to represent the appellant in these proceedings. There is certainly no indication he has any knowledge of New Zealand intellectual property law or procedure. Nor is there any indication he has relevant electrical engineering qualifications or experience.
[27] There is equally no evidence the appellant lacks the means to pay for legal representation, or that any effort has been made to engage a lawyer since August 2020. Nor do I accept Mr Lin’s suggestion that it is necessary for him to travel to New Zealand in order to instruct a barrister and solicitor.
[28] In light of these considerations, I decline the appellant’s application for leave to have Mr Lin represent it.
Result
[29]The application for leave is dismissed.
[30] A further case management conference will be scheduled in late July 2021. That will provide the appellant with a further, but final, opportunity to instruct a lawyer to represent it in this proceeding.
[31] Without determining the matter, if representation has not been resolved by the next conference, it may be necessary to consider whether striking out the appeal is an appropriate step.
Isac J
Solicitors:
Clifton Chambers, Wellington for Counsel Assisting
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